The trademarks law in India which was prior to 1940 was generally based on the common law system, which was however followed in England before the enactment of the first Registration Act, 1875. The first statutory which was the law dealing with the trade marks in India was called as the Trade Marks Act, 1940 which had introduced a machinery for the registration and the statutory protection of the trademarks in India.
The Act of 1940 was however replaced by the Trade and Merchandise Marks Act, 1958 which had consolidated the provisions that are related to the trademarks which generally contained in the other statutes such as the Indian Penal Code, 1860, the Criminal Procedure Code, 1973 and the Sea Customs Act, 1878.
The Trade Marks Act, 1999 had later repealed the Trade and Merchandise Marks Act, 1958 and is generally the current governing law that is related to the registered trademarks. The act of 1999 had come into force w.e.f. September 15, 2003, vide notification which is generally in the official gazette. The 1999 Act which was thus enacted in order to comply with the provisions of the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement, 1995. Though some of the provisions for unregistered trade marks generally have been enacted into the 1999 Act, and they are generally primarily governed by the common law rules which are based on the principles that have been evolved out of the judgments of courts.
Trademark to Section 2 (zb) of the Trade Marks Act, 1999 says that , “trade mark means a mark which is capable of being represented graphically and also which is capable of distinguishing the goods or the services of one person from those of the others and it may also include the shape of goods, their packaging and their combination of colours.” A mark can, however, include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or any combination of the colors or any such kind of combinations .
There are certain symbols that are used while trademark registration. TM stands for trademark and SM stands for service mark. TM and SM symbol notify the public that the company is claiming exclusive ownership of the trademark and it can genuinely be used by one who has filed a trademark application. The registration symbol is used only once when the trademark is registered and then the registration certificate is issued. The registration symbol is used in connection with the goods and/or the services in respect of which the trademark is registered.
The classification of the trademark is the most important classification and it is done on the basis of goods and services. The arrangement of documents for the classification of a trademark is done by the trademark attorneys and the trademark examiners.
- Class 1 is for chemicals
- Class 2 is for paints
- Class 3 is for cosmetic and cleaning prepare
- Class 4 is for lubricants and fuels
- Class 5 is for pharmaceuticals
- Class 6 is for metal goods
- Class 7 is for machinery
- Class 8 is for hand tools
- Class 9 is for electrical and scientific apparatus
- Class 10 is for medical apparatus
- Class 11 is for environmental control apparatus
- Class 12 is for vehicles
- Class 13 is for firearms
- Class 14 is for jewelry
- Class 15 is for musical instruments
- Class 16 is for paper goods and printed matter
- Class 17 is for Rubber Goods
- Class 18 is for Leather Goods
- Class 19 is for Nonmetallic Building Materials
- Class 20 is for Furniture and Articles Not Otherwise Classified
- Class 21 is for Housewares and Glass
- Class 22 is for Cordage and Fibers
- Class 23 is for Yarns and Threads
- Class 24 is for Fabrics
- Class 25 is for Clothing
- Class 26 is for Fancy Goods
- Class 27is for Floor Coverings
- Class 28 is for Toys and Sporting Goods
- Class 29 is for Meats and Processed Foods
- Class 30 is for Staple Foods
- Class 31is for Natural Agricultural Products
- Class 32 is for Light Beverages
- Class 33 is for Wines and Spirits
- Class 34 is for Smokers’ Articles
- Class 35 is for Advertising and Business
- Class 36 is for Insurance and Financial
- Class 37 is for Building, Construction, and Repair
- Class 38 is for Telecommunication
- Class 39 is for Transportation and Storage
- Class 40 is for Treatment of Materials
- Class 41 is for Education and Entertainment
- Class 42 is for Computer, Scientific and Legal
- Class 43 is for Hotels and Restaurants
- Class 44 is for Medical, Beauty, and Agricultural
The Trade Marks Act, both civil and criminal remedies are however simultaneously available against the infringement of trade mark as well as passing off the trademark
Infringement of trademark is generally a violation of the exclusive rights that are granted to the registered proprietor of the trademark in order to use the same. A trademark is however said to be infringed by a person, who, not is generally not being a permitted user, uses an identical/ similar/ deceptively or a similar mark to the registered trademark without the authorization of the registered proprietor of the trademark. However, it is generally pertinent to note that the Indian trademark law protects the vested rights of a prior user against a registered proprietor which is however based on common law principles.
Passing off is a common law tort which is used to enforce unregistered trademark rights. Passing off however essentially occurs where the reputation in the trademark of the party A is generally misappropriated by party B, such that party B misrepresents as being the owner of the trademark or either having some of the affiliation/nexuses with party A, thereby damaging the goodwill of party A. For an action of passing off, registration of a trademark is however irrelevant.
- Generally, Trademark Registration is thus not a pre-requisite in order to sustain a civil or criminal action against the violation of trademarks in India. In India, a combined civil action for the purpose of infringement of trademark and passing off can be initiated.
- Significantly, the infringement of a trademark is considered as a cognizable offense and also criminal proceedings can be initiated against the infringers. Such kind of enforcement mechanisms are generally expected to boost the protection of the marks in India and also to reduce infringement and the contravention of the